Ex Parte Adamczyk et al

Board of Patent Appeals and Interferences

Jun 18, 2012

11297721 (B.P.A.I. Jun. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/297,721 12/08/2005 Maria Adamczyk BLL0332USP 3362
36192 7590 06/18/2012
AT&T Legal Department - CC
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
SWARTHOUT, BRENT
ART UNIT PAPER NUMBER
2612
MAIL DATE DELIVERY MODE
06/18/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARIA ADAMCZYK and HONG THI NGUYEN
____________

Appeal 2010-004530
Application 11/297,721
Technology Center 2600
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/297,721

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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 5, 6, 8, 10, 12, 13, 15, 17, 19, and 20.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants’ invention concerns a method of operating a scheduling
system, including defining a schedule for a party (i.e., person). The schedule
comprises one or more events which are associated with a geographic
location. Each event may have a time associated therewith. A notification
message is received from a notification system server if the party has arrived
at the geographic location, and an event on the schedule is updated based on
the notification message. In a preferred embodiment, a contractual obligation
(for example, a restaurant reservation) is voided if the notification message
is not received before the time associated with the event, and a contractual
obligation is performed if the notification message is received before the
time associated with the event (Spec. 18-19).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method of operating a scheduling system, comprising:

defining a schedule for a party, the schedule comprising
at least one event that is associated with a geographic location;

receiving a notification message from a notification
system if the party has arrived at the geographic location; and

updating the event on the schedule based on the
notification message.

1 Claims 2, 4, 7, 9, 11, 14, 16, 18, and 21 have been cancelled.
Appeal 2010-004530
Application 11/297,721

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REFERENCES
Or-Bach US 6,988,079 B1 Jan. 17, 2006
(Filed Aug. 21, 2000)
Sone US 7,222,081 B1 May 22, 2007
(Filed Oct. 5, 2000)
Heintzman US 7,330,110 B1 Feb. 12, 2008
(Filed Mar. 28, 2001)

REJECTIONS
The Examiner rejected claims 1, 3, 5, and 6 under 35 U.S.C. § 101 as
being directed to nonstatutory subject matter.
The Examiner rejected claims 1, 3, 5, 6, 8, 10, 12, 13, 15, 17, 19, and
20 under 35 U.S.C. § 103(a) as being unpatentable based upon the teachings
of Sone in view of Or-Bach and a conventional reservation system or
Heintzman.

ISSUES
With respect to the § 101 rejection, Appellants argue that the
invention is patent-eligible because it is tied to a particular machine (the
notification system server) (App. Br. 4).
With respect to the § 103 rejection, Appellants argue that none of the
references teach voiding a contractual obligation if the notification message
has not been received before the specific point in time, or performing the
contractual obligation if the notification message has been received before
the specific point in time (App. Br. 5-6). In Appellants’ view, Heintzman
and conventional reservation systems both teach that the actual presence of
the individual is needed in order to determine whether to perform or void the
contractual obligation (App. Br. 6). The Examiner concluded that it would
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Application 11/297,721

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have been obvious to automate the known manual teachings of Heintzman or
conventional reservation systems, in order to achieve the claimed invention
(Ans. 4).
Appellants’ arguments and the Examiner’s findings present us with
the following issues:
1. Would it have been obvious to modify Sone and Or-Bach in view
of Heintzman, or conventional reservation systems, such that the voiding or
performance of a contractual obligation occurs as the result of the receipt or
non-receipt of a notification message?
2. Is Appellants’ invention directed to patent-eligible subject matter
under 35 U.S.C. § 101?

FINDINGS OF FACT
Heintzman
1. Heintzman teaches that a user such as a hotel manager is alerted
when parties with non-guaranteed reservations have not yet checked in past
a predetermined (and potentially user-defined) time. In some embodiments,
the following elements are used:
Reservation type field (A)
Checked-in status (B)
Defined system time when non-guaranteed reservations should be
canceled (C).
The system, at predetermined or user-defined time C, searches a
reservations database for reservations where type field A is a non-guaranteed
type, and where check-in status B is “not checked in.” If any such
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reservations exist, an alert is generated on the wireless communication
device (col. 12, ll. 28-41).

PRINCIPLES OF LAW
The Federal Circuit concluded that it would have been obvious to
combine (1) a mechanical device for actuating a phonograph to play back
sounds associated with a letter in a word on a puzzle piece with (2) an
electronic, processor-driven device capable of playing the sound associated
with a first letter of a word in a book. Leapfrog Ent., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (“[a]ccommodating a prior art
mechanical device that accomplishes [a desired] goal to modern electronics
would have been reasonably obvious to one of ordinary skill in designing
children’s learning devices”). In reaching that conclusion, the Federal
Circuit recognized that “[a]n obviousness determination is not the result of a
rigid formula disassociated from the consideration of the facts of a case.
Indeed, the common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not.” Id. at 1161
(citing KSR, 127 S.Ct. 1727, 1739 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”). The Federal Circuit relied in part
on the fact that Leapfrog had presented no evidence that the inclusion of a
reader in the combined device was “uniquely challenging or difficult for one
of ordinary skill in the art” or “represented an unobvious step over the prior
art.” Id. (citing KSR, 127 S.Ct. at 1740-41).

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ANALYSIS
§ 103 REJECTION
We select claim 1 as representative of the rejected claims, pursuant to
our authority under 37 C.F.R. § 41.37(c)(1)(vii).2
We are not persuaded by Appellants’ arguments that the Examiner
erred in rejecting the claims. We agree with the Examiner’s finding that
conventional reservation systems are known to teach that if a party does not
arrive at a specified time the contractual obligation to serve or host that party
is voided (Ans. 3). We further agree with the Examiner’s finding that
Heintzman discloses a reservation system whereby a reservation is voided if
a customer does not arrive by a certain predetermined time (Id.).
We further agree with the Examiner’s proposed modification of the
combination of Sone, Or-Bach, and Heintzman, to update reservations
automatically, merely substituting a computer generated signal for a human
notification signal (Ans. 6). In Leapfrog, accommodating a prior art
mechanical device to modern electronics was considered to be obvious, in
light of KSR’s holding that combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results. Leapfrog, 485 F.3d at 1161. Similarly, modifying
Heintzman’s teaching of generating an alert for a hotel manager concerning
reservations not checked-in, such that such reservations are automatically
cancelled due to non-receipt of a notification message by a certain time,
rather than manually cancelled by the hotel manager, would also have been

2 Appellants present a separate section for the discussion of claims 8, 10, 12
and 13. However, Appellants present the same arguments for claim 8 as
presented for claim 1. Therefore, we discuss all of the appealed claims
together.
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obvious when it yields only predictable results (FF 1). In this case, the non-
receipt of the notification message by a predetermined time still causes the
voiding of the contractual obligation, and the receipt of the notification
message by the predetermined time still results in the performance of the
contractual obligation.
We thus agree that the Examiner’s proposed combination of Sone, Or-
Bach, and Heintzman or conventional reservation systems would have been
obvious. Because the Examiner did not err, we will sustain the Examiner’s
§ 103 rejection of claims 1, 3, 5, 6, 8, 10, 12, 13, 15, 17, 19, and 20.
§ 101 Rejection
As explained supra, we affirm the rejection of all appealed claims.
Therefore, we need not reach the Examiner’s rejection of claims 1, 3, 5, and
6 under 35 U.S.C. § 101.

CONCLUSIONS
1. It would have been obvious to modify Sone and Or-Bach in view of
Heintzman, or conventional reservation systems, such that the voiding or
performance of a contractual obligation occurs as the result of the receipt or
non-receipt of a notification message.
2. We do not reach the question whether Appellants’ invention is
directed to patent-eligible subject matter under 35 U.S.C. § 101, as the issue
is moot in view of our affirmance of the rejection under 35 U.S.C. § 103.

DECISION
The Examiner’s decision rejecting claims 1, 3, 5, 6, 8, 10, 12, 13, 15,
17, 19, and 20 is affirmed.
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Application 11/297,721

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R.§ 1.136(a)(1)(iv)(2010).

AFFIRMED

Vsh